Friday, December 3, 2010

Not only are new smartphone patent suits filed all the time -- especially with respect to Android -- but there's also significant escalation in some of the ongoing disputes.

I just analyzed Apple's latest court filing (made on Thursday, 2 December, in the District of Delaware; case no. 1:10-cv-00867). The bottom line of all the suits between those two parties: Apple now alleges that Motorola infringes 24 of its patents (21 of them with Android-based phones, the remaining 3 with set-top boxes and DVRs), while Motorola previously asserted 18 patents against a variety of Apple products (mostly but not exclusively iPhone, iPad and iPod). That's a whopping total of 42 different patents-in-suit between them at this stage.

Litigation between the two companies takes place in several different federal courts -- primarily the Western District of Wisconsin and the Southern District of Florida -- as well as before the US International Trade Commission (ITC).

In early October, Motorola threw down the gauntlet in what looked to me like a pre-emptive strike at a point when Motorola probably knew that Apple was already preparing suits against it.

On 06 October 2010, Motorola filed infringement suits against Apple over a total of 18 patents. Those 18 patents were arranged as three "six packs". One six pack was used for an ITC complaint as well as a suit in the Northern District of Illinois, where the second six pack was asserted as well. Motorola asserted the third six pack in the Southern District of Florida.

Two days later, on 08 October 2010, Motorola filed a suit in the District of Delaware for declaratory judgment that 12 Apple patents (all of which were previously asserted by Apple against HTC's equally Android-based phones) were invalid and, if valid, not infringed by Motorola. Such a request for declaratory judgment can provoke two reactions. The absolutely unlikely one in this case would have been for Apple to yield. The realistic expectation always was that Apple would say: "no way that we would ever give up those patents, and you do infringe them and we'll prove it." So I'm convinced that Motorola made its declaratory judgment request only for the purpose of creating a Delaware case as opposed to waiting for Apple to sue in some other venue.

On 29 October 2010, Apple finally launched its long-awaited attack on Motorola, but since Motorola had already triggered the aforementioned dispute over 12 Apple patents, Apple contented itself with picking 6 other patents at that point. Two three packs were asserted in parallel suits in the Western District of Wisconsin, and one of them was additionally asserted in an ITC complaint.

So as per the end of October, Apple was actively suing Motorola over 6 different patents, plus there were those 12 Apple patents concerning which Motorola basically attempted suicide rather than waiting for death. At that time, Motorola alleged that Apple infringes 18 of its patents.

In a previous blog post I explained that quantities of patents are one of a number of factors: in the end it's all about impact. Nevertheless, it is interesting to watch how those numbers of asserted patents evolve and how the different players react when an adversary throws in some additional patents.

On 09 November 2010, Motorola effectively moved its two suits from the Northern District of Illinois to the Western District of Wisconsin (a neighbor state). Motorola made this move happen procedurally by dropping its Illinois cases and simultaneously using those two six packs of patents for counterclaims in the two different suits Apple had filed in Wisconsin. So there were two suits in Wisconsin, each with an Apple three pack and an opposing Motorola six pack.

On 18 November 2010, Apple showed that it had warmed up to Florida -- a venue previously chosen by Motorola. In response to Motorola's Southern Florida six pack, Apple asserted (by way of counterclaims as part of its answer to Motorola's complaint) six patents as well.

Apple's Southern Florida "counter-six pack" consists of three patents Apple previously asserted against HTC in Delaware (one of them also against Nokia in Wisconsin) and three other patents that Apple deems infringed by a long list of Motorola set-top boxes and DVRs. Given that Motorola's infringement assertions against Apple also relate to a diversity of products (not just smartphones), Apple may have wanted to demonstrate that it can also target non-phone Motorola products with some of its patents.

As per the end of November, Motorola still had 18 patents in action against Apple, and Apple actively asserted 12 (6 more than a month before) against Motorola. 30 patents-in-suit by a narrow definition. Plus, Apple still had to respond to Motorola's "suicide mission" concerning 12 Apple patents.

On Wednesday (01 December 2010), Apple amended one of its two Wisconsin complaints against Motorola -- the one in which Apple originally asserted the three pack that it did not assert in an ITC complaint. The net effect of the amendment is that Apple additionally alleges Motorola's infringement of the 12 patents concerning which Motorola sought a declaratory judgment in Delaware.

On Thursday (02 December 2010), Apple then asked the US District Court for the District of Delaware to (ideally) dismiss Motorola's declaratory judgment suit or (alternatively) to transfer it to the Western District of Wisconsin, where Apple just asserted those patents against Motorola the day before.

That filing was published only a few hours ago and in my analysis I noted that Apple also mentions the two simultaneous suits Motorola filed against Microsoft with that court, basically saying that Motorola shouldn't have a problem if the dispute related to those 12 patents was transferred to a court that Motorola itself had chosen as the venue for parts of its dispute with Microsoft.

I previously assumed that Apple was going to take the bait concerning those 12 patents. Nevertheless it's an important move that Apple is now indeed asserting those patents against Motorola. So there are now 24 Apple patents that Motorola allegedly infringes, and 18 Motorola patents allegedly reading on certain Apple products.

A few days ago, it became known that Apple hired some of the United States' best patent lawyers (plus a former Intel lawyer as an in-house counsel focusing on Apple's many patent suits). In addition to hiring ever more top-notch lawyers, Apple asserts an increasing number of patents. This is huge and could take a while to sort out.

If you'd like to be updated on patent issues affecting free software and open source, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

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About Me

Florian Mueller used to be an award-winning intellectual property activist. His 30 years of software industry expertise span different market segments (games, education, productivity and infrastructure software), diverse business models, and technical and commercial areas of responsibility. In recent years, Florian advised a diversity of clients on the patent wars surrounding mobile devices, and on their economic and technical implications. (In order to avoid conflicts of interest, Florian does not hold or initiate transactions in any technology stocks or derivatives thereof, except that he is long AAPL.) He is now developing games for smartphones and tablet computers.